Can’t Occupy, Hon

Following up on our November 9 post about the Baltimore-centric “HON” trademark controversy, I checked the U.S. Patent & Trademark Office database this morning and confirmed that, true to owner Denise Whiting’s promise, Cafe Hon, Inc. voluntarily surrendered its trademark registrations for HON in late November. Whiting cancelled her company’s registration of Baltimore’s much loved term of endearment for use as a trademarkwith respect to bumper stickers, napkins, note cards, gift cards, greeting cards, stationary, wrapping paper, gift bags, note bags, note paper, calendars, pens (in Class 16) as well as with respect to t-shirts, sweatshirts, tank tops, hats and caps, boas, short sleeved shirts, shorts, capri pants, underwear, ties, halter tops in Class 25 and retail gift shops (in Class 35). Whiting even went so far as to cancel her company’s registration of the term for use with respect to restaurant services (in Class 43) but maintained its federaltrademarkregistrations for CAFE HON® (and design) and for HONFEST®. When I first posted about the HONtroversy, I couldn’t recall another instance where a trademark registrant had voluntarily surrendered federal registrations in response to community protests. Enter Occupy Wall Street …

The Occupy protest movement is reacting to a race to theTrademarkOffice in which a host of entrepreneurs seeking to cash in on the movement have filed to register trademarks for Occupy themed names and slogans. Registration of variations of the OCCUPY WALL STREET name have been sought by multiple would-be Occupy moguls, including OCCUPY HIP HOP, OCCUPY THE VOTE 2012, OCCUPY ANY WEAR (not surprisingly in Class 25 for clothing), and my personal favorite EVERYWHERE I GO I OCCUPY. Someone applied to register trademark rights in WE ARE THE 99 PERCENT and I AM THE 99 PERCENT.

The unincorporated association that calls itself Occupy Wall Street (OWS) and purports to represent the community that has occupied ZucottiPark, applied to register OCCUPY WALL STREET in Classes 16, 18, 25 (including tee-shirts) and 41 on the afternoon of October 24. Later that evening, Fer-Eng Investments LLC (an Arizona LLC with aCalifornia address) applied to register the same mark, also in Classes 18 and 25 (including tee-shirts). Because OWS’s application was filed earlier in the day, it received a lower serial number and will have priority over Fer-Eng’s application.

According to the Intellectual Property Brief website and blog published by the American University’s Washington College of Law, Fer-Eng Investments, LLC appears to be a shell corporation controlled by the Ferraro-Eng Family Trust, the name of which apparently refers to Vincent Ferraro, a Stanford Business School grad and former VP of Hewlett-Packard and his wife, Wee Nah Eng. According to the blog post, published under the headline “Top 1% Files for Trademark of ‘Occupy Wall Street’”, Mr. Ferrara is a former Vice-President of Worldwide Marketing for Hewlett-Packard and now serves as the Vice President and Chief Marketing Officer of Global Marketing for Eastman Kodak. Also according to the blog post, Mr. Ferrara is most likely in the top 1% of income earners, a fact that makes his attempt to own the OWS trademark seem incompatible with the ethos of the Occupy movement. According to CNN Money.com, Mr. Ferraro has said that he had applied for the trademark “as a business proposition and not in any way affiliated with Occupy Wall Street.” Mr. Ferraro has been quoted as stating that domains and trademarks are “the chattel of the 21st century.”

The relevant filing for purposes of this post came a week earlier, when Diane Maresca, on behalf of her and her husband Robert Maresca, both New Yorkers, applied to register OCCUPY WALL ST. in Classes 18 and 25 (including shirts). The Smoking Gun reported that the Marescas had visited Zucotti Park, created shirts drawn with markers, and decided to apply for the trademarkfor OCCUPY WALL ST., because, according to Robert Maresca: “If I didn’t buy and use it, someone else will.” According to CNN, Robert Maresca said “I’m the best person I could imagine buying this slogan, because no one has their interests more than myself.” Subsequently, the Marescas received a lot of criticism in the press and blogosphere that their attempt to “own” the name Occupy Wall St. was a crass attempt to cash in on the Occupy movement. The Marescas reconsidered, and voluntarily abandoned their trademark application. The Smoking Gun quoted Robert Maresca as saying “we decided to step away and let the [OWS] group go forward with their trademark, now they are first in line.”

Entrepreneurs routinely seek to create brands that harness the name recognition and currency associated with terms from popular culture. The Marescas appeared to view their trademark application as a kind of lottery ticket. It is likely that the Marescas learned a lot about trademark law, especially the expense and difficulty (many would say impossibility) of enforcing their trademark “rights” should their registration have issued. Even though a number of Occupy sympathizers weighed in on how wrong it would be for business to cash in on the Occupy movement by locking up trademark rights, my guess is that most of the Occupy community remains unaware of the issue. It seems unlikely the reaction to Occupy trademark issue will ever reach the fevered pitch that the HONtroversy reached in Baltimore.

While some communities have long protested sports teams and academic institutions for perpetuating offensive stereotypes through the use of certain team names and mascots, the HON controversy is unusual because it does not implicate such charged topics. Rather, a local community rallied and expressed outrage at an entrepreneur’s efforts to secure a trademark registration for a local term of endearment. While the word “Hon” has a colorful history associated with Baltimore characters and caricatures, spanning at least several generations, it was not obvious that Baltimoreans would react so strongly to one business’s efforts to secure trademark registrations for that term. The Occupy movement seems too new and disparate in its views and priorities to vigorously mount a protest against entrepreneurs seeking to register trademarks, even for terms that seem to define a community that refuses to define itself. While I don’t expect to see the nascent Occupy movement focus its energies on trademark issues, there has been enough public outrage already to deter some, like the Marescas, from efforts to appropriate terms charged with meaning antithetical to private control and ownership. Ultimately any registrations that might be issue for terms and phrases originating in a popular movement like Occupy will be of questionable validity and difficult to enforce. Just like HON, hon.

2 Comments

The question I have, is should anyone be able to register OCCUPY _______? Either as cultural property or on the theory that “Occupy” went generic almost overnight for political protest encampents and “Name your Town” is descriptive – one would need proof of consumer recognition for a registration, right?

The applicatons have been focused on products rather than for organizing activities. Like APPLE, which is generic for fruit but registrable for computers, the term Occupy is a generic reference to the encampments, but is not generic for products that incorporate the name. Of course, it didnt have to be a generic term. Had the event been organized with ownership and control in mind, like Louis Farrakhan’s (Nation of Islam’s) Million Man March, the event “promoter” might have been able to assert ownership and control over the name and its use on merchandise, but given that there is no central control, Occupy is more like an historical event for which the name is in the public domain, and uses of the name in merchandise essentially starts as a free for all, whic will make it very difficult to establish and enforce trademark rights where the work Occupy is used purely as a reference to the “movement” and not combined with other text that would mark something different (e.g., Occupy Hip Hop).

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